“Patent Troll” Roaming the Porn Industry

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Sex Tech Law Blog Patent Trolls

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[IMPORTANT UPDATE ON STATUS SINCE ORIGINAL PUBLICATION IS AT FAR END OF THE ARTICLE BELOW]

Mindgeek USA Inc., operator of multiple porn websites including PornHub.com, was recently sued for patent infringement in November 2016. The suit, brought by Vilox Technologies, LLC in the plaintiff-friendly Texas Eastern District Court, alleges infringement of the following patents:

U.S. Patent 6,760,720 (the “‘720 patent”), titled “Search-on-the-Fly/Sort-on-the-Fly Search Engine for Searching Databases,” issued July 6, 2004.

U.S. Patent 7,188,100 (the “‘100 patent”), titled “Search-on-the-Fly Report Generator,” issued March 6, 2007.

U.S. Patent 7,302,423 (the “‘423 patent”), titled “Search-on-the-Fly with Merge Function,” issued November 27, 2007.

Vilox appears to be a non-practicing entity (NPE) – a company that owns patents, and makes money by suing third parties for infringement of those patents, without producing a covered product of its own. NPE’s are coined “patent trolls” by those who believe that such a strategy is in bad conscience.*

The adult industry is no stranger to patent trolls. Most recently, we saw this with “The Teledildonics Patent” in the sex toy industry, where NPE, Tzu Technologies, sued several companies for infringement of a patent issued in 2001 directed to remote controlled sexual stimulators. Take a look at my full article on that topic here.

Turning back to the case at hand, the complaint alleges:

  1. Upon information and belief, MindGeek owns and operates a series of databases containing content that is delivered to and accessed by users online via a computer. Among the MindGeek databases are a series of databases of adult-only content that MindGeek offers under the tradename “PornHub Network” (“PHN”). The PHN consists of databases that are accessible both independently through discrete URLs, e.g., http://pornhub.com, http://youporn.com, http://pornmd.com, http://thumbzilla.com, etc., and through a network-wide search.

  2. Upon information and belief, the PHN and its constituent databases are searchable via MindGeek’s “PornMD” search engine (together, the “PHN System”). MindGeek’s PHN System allows a user to search either an individual database, such as http://pornhub.com or http://pornmd.com, or across the constituent databases of the PHN iteratively and without knowledge of the structure or organization of the databases being searched.

A patent is infringed if a product includes each and every feature of one or more claims of the patent. An example claim at issue in the Mindgeek case includes claim 1 of the ‘720 patent, which recites:

A method implemented on a computer for searching databases, comprising:

determining a database schema for a database, wherein the database includes database fields;

providing a list of the database fields, wherein the list includes a descriptor indicating a data category;

receiving a search selection for a database field on the provided list of the database fields;

determining a quantity of entries in the selected database field;

if the quantity exceed a specified amount, truncating data, and displaying the truncated data wherein the truncating reduces characters in one or more entries in the selected database field and the truncated data represents each of the entries in the selected database field; and

if the quantity does not exceed the specified amount, displaying contents of the database field.

The complaint alleges that Mindgeek’s searching systems include all of such features, as well as features of claims from the ‘100 patent and ‘423 patent. So let’s try to look through the elements of the claim above in “non-patent-attorney” speak. My interpretation of those claims translates as follows:

A method for searching databases – This is the “preamble,” i.e. the intro. It is simple enough, and self-explanatory here.

Step 1: Determine a schema of a database. Naturally, by definition, the database includes database fields.

Step 2: Provide a list of the database fields. The list includes a descriptor of a category of the data in the database fields.

Step 3: Receive, from a user, a selection of a database field from the list.

Step 4: Determine the amount of entries in the selected database field.

Step 5: Either of:

IF the amount exceeds a particular number, shorten the data, and display the shortened data.

IF the amount does NOT exceed the particular number, display the entries of the database field.

You are probably thinking – “Well, this sounds like how most search systems work that I’ve used online!” Remember, though, that that is your thought today, but this patent was actually filed back in 2000. So its claims were compared to the state of the art at that time, and at that time, this search method may not have been previously developed. I use the word MAY because I don’t know off the top of my head exactly what search systems were capable of at that snapshot in time. If the method was novel and non-obvious compared to what was done before its filing date, it would be entitled to patent… A patent that would then be valid for 20 years.

The seeming intuitiveness of this method is probably why many companies have gotten caught in its web, as well as the webs of the related Vilox patents. The Mindgeek suit appears to be the tenth lawsuit filed by Vilox based on these patents. In addition to www.Pornhub.com, Mindgeek operates www.YouPorn.com, www.PornMD.com, and www.Thumbzilla.com, all at issue in the lawsuit. Other companies that have found themselves on the defensive include: Costco, Expedia, Express, Footlocker, L Brands Inc. (Bath & Body Works, and Victoria Secret), Lowes, Orbitz, Priceline, and TripAdvisor.

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I’m not commenting on whether Mindgeek’s search systems do, in fact, read on the claims of the cited patents. But even if they do, the case is not closed that simply, as it is still possible that “Alice” may come to the rescue… So, who is Alice, and why is she so important? She is Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the landmark U.S. Supreme Court decision that issued in 2014. That case has been a thorn in the side of every patent attorney who has tried to obtain patents for their clients on software in the last two and a half years. This case has not only made it exceedingly difficult to get a patent on software inventions, but has also caused a slew of issued patents on software inventions to be invalidated.

According to U.S. statute, 35 U.S.C. 101, one may receive patent protection for any “process, machine, manufacture, or composition of matter….” Excepted from these categories include laws of nature, physical phenomena, and abstract ideas. In Alice, the U.S. Supreme Court held that claims directed to an “abstract idea” must have additional elements capable of rendering them significantly more than the abstract idea itself. The Court explained that a patent-ineligible abstract idea cannot be transformed into a patent-eligible invention simply by recitation of a generic computer. However, the Court did not define what exactly constitutes an abstract idea. It has been up to lower courts to define this, and therefore, it has been in flux ever since.

In my opinion, the patents at issue in the Mindgeek case are most certainly at risk of challenge based on Alice. The Vilox patents issued long before the Alice decision was rendered, and Alice is currently good (i.e. “valid”) law, even though it was not necessarily the law back at the time such patents were examined. Although the Vilox patents are directed to searching of databases, there is a reasonable argument to be made by Mindgeek in light of recent case law including Alice and cases that followed, that searching of databases is directed to an abstract idea, and therefore, not entitled to patent protection. A win on this argument would invalidate the Vilox patents, getting Mindgeek off the hook scot-free (even if its systems were otherwise to infringe on one or more of the patents).

I’ll keep an eye on this case, so others can keep their eyes on those videos that make the porn industry so profitable. Subscribe to our mailing list to receive updates on this and similar cases in your inbox.

UPDATE: On January 24, 2017, an order was issued by the Court dismissing the suit based on Vilox’s proposal for voluntarily dismissal. Accordingly, it is likely that the parties reached a settlement, however, I have not been able to find confirmation or details of any terms. In any case, the suit has been dismissed and cannot be brought again as the dismissal was “with prejudice.”

*Note that I do not endorse use of the word “patent trolls” or related terms for NPEs; I use the terms here for dramatic literary effect only.

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